Mandel, David Download PDFPatent Trials and Appeals BoardMar 8, 20212019005111 (P.T.A.B. Mar. 8, 2021) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/231,137 08/08/2016 Ayla Mandel 26025US03 7846 23446 7590 03/08/2021 MCANDREWS HELD & MALLOY, LTD 500 WEST MADISON STREET SUITE 3400 CHICAGO, IL 60661 EXAMINER NGUYEN, KIMBINH T ART UNIT PAPER NUMBER 2612 NOTIFICATION DATE DELIVERY MODE 03/08/2021 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): mhmpto@mcandrews-ip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte AYLA MANDEL, DAVID MANDEL, and STEPHEN D. WILLIAMS ____________________ Appeal 2019-005111 Application 15/231,1371 Technology Center 2600 ____________________ Before JASON V. MORGAN, JON M. JURGOVAN, and JOHN E. SCHNEIDER, Administrative Patent Judges. JURGOVAN, Administrative Patent Judge. DECISION ON APPEAL Appellant seeks review under 35 U.S.C. § 134(a) from a Final Rejection of claims 1 and 22–41, constituting all of the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART.2 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. According to Appellant, the real party in interest is Ayla Mandel and David Mandel. Appeal Br. 1. 2 Our Decision refers to the Specification (“Spec.”) filed August 8, 2016; the Final Office Action (“Final Act.”) mailed February 14, 2019; the Appeal Brief (“Appeal Br.”) filed April 11, 2019; the Examiner’s Answer (“Ans.”) mailed May 23, 2019; and the Reply Brief (“Reply Br.”) filed June 18, 2019. Appeal 2019-005111 Application 15/231,137 2 CLAIMED INVENTION The claims relate to a method of operating a system for producing an image or video with an avatar depicting an object in a context selected by an end user. Spec. ¶ 5. The method includes monitoring and gathering information from servers of Internet-based sources such as social media website and public news sources, to determine subject matter of trending topics. Id. ¶ 68. The method further includes classifying the gathered information by their characteristics. Id. The method includes retrieving background images related to a topic selected according to user input. Id. ¶¶ 69–71. The method includes creating one or more combined images including the avatar and retrieved background images according to characteristics and end-user input for display. Id. ¶ 71. Claims 1, 28, and 35 are independent. Claim 1 is a method; claim 28 is a system; and claim 35 is a computer-readable medium. Appeal Br. 11, 13, 15–16 (Claims App.). Claims 22 to 27 depend from claim 1; claims 29 to 34 depend from claim 28; and claims 36 to 40 depend from claim 35. Claim 1, reproduced below, is representative of the claimed subject matter. Argued claim limitations are shown in italics: 1. A method of operating a system for producing an image or video comprising an avatar depicting an object in a context selected by an end-user of the system, the system comprising one or more processors operably coupled to a display, the method comprising: monitoring information received from servers of one or more Internet-based sources comprising one or both of a social media website and a public source of news to determine subject matter of topics of the information received from the sources; gathering information items about the subject matter of at least one topic of the topics of the information received from Appeal 2019-005111 Application 15/231,137 3 the sources, the information comprising one or more images and any textual content attached to or associated with the one or more images; classifying the gathered information items, to determine one or more characteristics of the information items; retrieving one or more images related to the at least one topic selected according to input from the end-user of the system; and creating one or more combined images comprising an the avatar depicting the object and one or more background images selected from the retrieved one or more images according to the one or more characteristics and the input from the end-user of the system, for the display. Appeal Br. 11 (Claims App.). REJECTION Claims 1 and 22–41 stand rejected under 35 U.S.C. § 103 based on De Keyser (WO 2013/120851 A1, published August 22, 2013); Davis (US 2013/0257877 A1, published October 3, 2013); and Bill (US 2013/0243245 A1, published September 19, 2013). Final Act. 7–14. ANALYSIS Standard of Review We undertake a limited de novo review of the appealed rejections for error based upon the issues identified by Appellant, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). Appeal 2019-005111 Application 15/231,137 4 § 103 Rejection Title 35, section 103, provides A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.3 The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) where present, objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). A. Independent Claims 1, 28, and 35 Appellant presents the same arguments for claims 1, 28, and 35. See Appeal Br. 5–9. Accordingly, we select claim 1 as representative of the independent claims and unless otherwise indicated will restrict our analysis to this claim only. 37 C.F.R. § 41.37(c)(1)(iv) (“When multiple claims subject to the same ground of rejection are argued as a group or subgroup by appellant, the Board may select a single claim from the group or subgroup 3 The AIA included revisions to 35 U.S.C. § 103 that became effective on March 16, 2013. Because the present patent application was filed after this date, we assume AIA § 103 applies to this application. However, on this record, our analysis would not be different if pre-AIA § 103 applied to this case. Appeal 2019-005111 Application 15/231,137 5 and may decide the appeal as to the ground of rejection with respect to the group or subgroup on the basis of the selected claim alone”). Appellant argues that De Keyser fails to show the “monitoring information . . . to determine subject matter of topics of the information received from the sources” as recited in claim 1. Appeal Br. 5–6. We agree with Appellant’s argument. The cited parts of De Keyser address a three- dimensional model (an avatar) stored on a platform in a cloud environment (4:14–21); cloud computing (8:23–26); a cloud application (9:3–5); a “living portrait” (18:1–10); text-to-speech conversion using third party technology (18:20–22); and a server controlling an event, which may interact with social networks (47:19–21). Final Act. 7. The Examiner has not shown adequately how these De Keyser citations disclose the claimed monitoring of information of a social media website or public news source to determine the subject matter of topics of information received from the source. In the Answer, the Examiner cites to numerous other parts of De Keyser, and to Davis, as disclosing the claimed “monitoring.” Ans. 4–6. To the extent these citations are different from those relied on in the Final Office Action, they should have been included in a new ground of rejection. See 37 C.F.R. § 41.39. In any event, the Examiner equates the claimed “topics” to at least three different things: (1) discussions (Ans. 4); (2) a human subject (Ans. 6); and (3) interactive behavioral and personality characteristics (id.). While claim terms are to be given their broadest reasonable interpretation consistent with the specification in which they appear (see In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004)), we find the Examiner’s interpretation to be unreasonably broad in light of what the Appeal 2019-005111 Application 15/231,137 6 Specification describes concerning the claimed “monitoring.” Particularly, paragraph 68 of the Specification describes monitoring of various sources of news and social traffic to determine currently trending topics such as entertainment, weather, sports, finance, crime, housing, health and medical. The Specification further describes that this information may be gathered, analyzed, and classified to determine subject matter, level of importance and timeliness, global/local relevance, and mood. Id. In light of the Specification, the Examiner’s finding that “topics” equate to “discussions” is in error because, while the content of discussions may include topics, discussions are not per se topics. And “topics” as the term is used in the Specification does not correspond to a “human subject” or “interactive behavioral and personality characteristics” as the Examiner finds. Accordingly, the Examiner’s rejection is based on an overly broad interpretation of the claimed “monitoring” and we do not sustain the rejection of claims 1, 28, and 35. B. Remaining Claims For the reasons stated above with respect to independent claims 1, 28, and 35, we do not sustain the § 103 rejection of dependent claims 22–27, claims 29–34, and claims 36–40. C. Remaining Arguments Having decided the appeal of the § 103 rejection on the basis stated above, we do not reach Appellant’s remaining arguments concerning the obviousness rejection. Double Patenting The Examiner rejected claim 1 on the ground of non-statutory obviousness-type double patenting over claim 1 of U.S. Patent No. Appeal 2019-005111 Application 15/231,137 7 9,413,192. Final Act. 4–6. Appellant argues that since claim 1 of the present application has not yet been allowed, no double patenting yet exists. Appeal Br. 10. We do not agree that claim 1 of the subject application must be allowed for a double patenting rejection to be timely. See MPEP § 804. Other than the timing, Appellant does not argue the propriety of the double- patenting rejection. See Appeal Br. 10. Consequently, we sustain the double-patenting rejection of claim 1. CONCLUSION For the stated reasons, we reverse the Examiner’s rejection of claims 1 and 22–41 under 35 U.S.C. § 103. We affirm the rejection of claim 1 for non-statutory obviousness-type double-patenting. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 22–41 103 De Keyser, Davis, Bill 1, 22–41 1 Obviousness-Type Double-Patenting 1 Overall Outcome 1 22–41 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). Appeal 2019-005111 Application 15/231,137 8 AFFIRMED-IN-PART Copy with citationCopy as parenthetical citation